Accelerated processing

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Chapter 1. Main tool for speeding up the process: PACE

Section 1.1. Legal basis

The PACE program (or " Program for Accelerated Prosecution of European Patent Applications") Is provided by the Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93.

Section 1.2. Form

It is possible to request an expedited processing of his request (for the extended search report or the first notification as soon as possible) on a simple written request (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 1) using the EPO Form 1005.

Section 1.3. Secret

PACE requests are not published and are excluded from public inspection (" Decision of the President of the European Patent Office dated 12 July 2007 concerning parts excluded from public inspection », OG 2007, Special Edition No. 3, J.3, A1 (1) (c) and " Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 3).

Section 1.4. Limitation of the number of requests

If an applicant submits virtually all of their applications with a PACE request, they may be required to limit their requests and choose the ones they really want to focus on (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 6).

In addition, this program is constrained by the workload of the EPO (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 6).

Some technical fields may be subject to restrictions in the event of too many requests ( Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 6).

Chapter 2. Acceleration at different stages

Section 2.1. At the stage of entry into phase

The EPO as a designated / elected Office does not process an international application before the expiry of the 31-month period from the filing date or, if a priority has been claimed, from the priority date.

The applicant may request the commencement of processing before the expiry of that period by filing an explicit request for advance processing (" Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94).

Section 2.2. At the research stage

2.2.1. For applications filed before July 1, 2014

1) Requests without priority

Applications not claiming priority and filed before July 1, 2014 are already in an expedited process: there is no point in applying for PACE.

The EPO is already making the RREEs available under 6 months from the filing date (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 9)

2) Applications with priority (s)

It is possible to apply for the PACE program for applications claiming priority: a search will be conducted as soon as possible (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 9).

In order to carry out an accelerated search, it is necessary for the EPO to have Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 10):

  • the revendications,
  • the description,
  • the required translations,
  • the drawings (if any),
  • the sequence listing (if any).

2.2.2. For applications filed after July 1, 2014

There is nothing to be done ... normally the EPO treats them as if a PACE request were made (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 8)

2.2.3. Case of Euro-PCT applications

Normally, even in the event of early entry before the deadline 31 months from the priority, the EPO does not process the application unless the applicant expressly requests Notice from the European Patent Office dated 21 February 2013 concerning the request for advance processing », OG 2013, 156 conform to theA23.2 PCT or A40.2 PCT).

If the express request for early entry is made prior to the publication of the international application, the applicant or the EPO must also request the IB to provide the documents of the application in accordance with theA20 PCT (A23.2 PCT or A40.2 PCT together R47.4 PCT).

No form is required for this request.

The applicant must then comply with the phase entry requirements (eg, pay the filing fee, the additional fee if the application consists of more than 35 pages), produce a translation, specify the application documents and pay the import tax. research) (" Notice from the European Patent Office dated 21 February 2013 concerning the request for advance processing », OG 2013, 156).

In the case of PCT applications entering the European phase for which the EPO has not acted as ISA or SISA: at the end of the six-month period provided for in R161 (2) EPC, although accelerated processing was requested under the PACE program.

In order for the complementary European search to start immediately, the applicant must, when entering the European phase, explicitly renounce the right to receive notifications issued under R161 (2) EPC and R162 (2) EPC and pay any claim fees due (see " Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure«, OJ 2015, A94 and Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 10).

Section 2.3. At the examination stage

2.3.1. Principle

You can apply for PACE at any time ( ' Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 paragraph 12), since the Examining Division is competent.

In the case of payment by direct debit, the examination fee is levied upon receipt of the PACE Regulations on the automatic debiting procedure », OJ 3/2009, supplement, p19, point 6.1.b).

In the event of an accelerated procedure, the EPO makes every effort to issue the first notification under 3 months (the period expiring later being retained, Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 14):

  • from the receipt of the application, or
  • from the applicant's response under the R70bis EPC or R161 (1) EPC, or
  • from the PACE request.

The following notifications are issued within the same period of 3 months from the applicant's answer if (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 15):

  • the response is produced in a timely manner;
  • the reply addresses all the points raised in the previous notification.

2.3.2. Case of Euro-PCT applications

It is also possible to apply for the PACE program at any time.

If the applicant requests early entry (A23.2 PCT if "designated" or A40.2 PCT if "elected"), this does not mean that the PACE program is requested, it must be explicitly asked (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 item 13 and its footnote).

In the case of PCT applications entering the European phase for which the EPO has acted as ISA or SISA, the expedited examination may in principle be requested at any time, for example (" Notice from the European Patent Office dated 30 November 2015 concerning the program for the Accelerated Processing of European Patent Applications ("PACE") », OJ 2015, A93 point 13):

  • when entering the European phase before the EPO, or
  • together with the answer to be given to the written opinion of the ISA, the international preliminary examination report or the supplementary international search report in accordance with the R161 (1) EPC.

The other points remain the same.

Section 2.4. Other ways to speed up the procedure

2.4.1. Patent Prosecution Highway (or PPH)

As part of the "Patent Prosecution Highway" (or PPH) program, it is possible to obtain an accelerated PACE examination (point D) if (" Patent Prosecution Highway pilot program between IP5 offices on the basis of PCT and national work products », OY 2016, A106):

  • at least one claim is considered patentable (point B.2) for:
    • a demand US ;
    • a demand JP ;
    • a demand KR ;
    • a demand CN ;
    • a demand PCT (ISA or IPEA being US / JP / KR / CN);
  • all the claims of the EP application must be identical / close to this request (identical or similar scope, point B.3);
  • the demand EP must have the same effective date as this request (point B.1), for example:
    • it claims the priority of this request;
    • it is the priority demand for this request 
    • it has a common priority document with this application;
    • it results from the same PCT international application as this request (the ISA or IPEA being US / JP / KR / CN);
  • the EP examination must not have started (point B.4).

Similarly, some agreements have been concluded with national offices. It is possible to obtain an accelerated PACE examination if at least one claim is considered patentable for:

  • a demand IT (or PCT for which the ISA or IPEA is IT, " Patent Prosecution Highway pilot program between the European Patent Office and the Canadian Intellectual Property Office on the basis of products resulting from PCT work and national works », OY 2017, A107);
  • a demand HE (Israel) (or PCT for which ISA or IPEA is HE, " Patent Prosecution Highway Pilot Program between the European Patent Office and the Israeli Patent Office on the basis of proceeds from PCT work and national works », OY 2017, A108);
  • a demand MX (or PCT for which the ISA or IPEA is MX, " Patent Prosecution Highway pilot program between the European Patent Office and the Mexican Institute of Industrial Property, on the basis of products resulting from PCT work and national works », OY 2017, A109);
  • a demand TO (Australia) (" Patent Prosecution Highway pilot program between the European Patent Office and the Australian Patent Office on the basis of products resulting from PCT work and national works«, OJ 2016, A54) ;
  • a demand SG (Singapore) (" Patent Prosecution Highway pilot program between the European Patent Office and the Singapore Intellectual Property Office on the basis of PCT and national work products«, OY 2017, A110) ;
  • a demand CO (Colombia) (« Patent Prosecution Highway pilot program between the European Patent Office and the Superintendency of Industry and Commerce of Colombia on the basis of products resulting from PCT work and national works«, OJ 2016, A75);
  • a demand UK (Russia) (« Patent Prosecution Highway pilot program between the European Patent Office and the Federal Intellectual Property Service on the basis of PCT and national work products«, OJ 2017, A5) ;
  • a demand MY (Malaysia) (" Patent Prosecution Highway pilot program between the European Patent Office and the Malaysian Intellectual Property Office on the basis of proceeds from PCT work and national works«, OY 2017, A46);
  • a demand PH (Philippines) (" Patent Prosecution Highway Pilot Program between the European Patent Office and the Philippine Intellectual Property Office on the basis of proceeds from PCT work and national works«, OY 2017, A47)
  • a demand Eurasian ( ' Patent Prosecution Highway pilot program between the European Patent Office and the Eurasian Patent Office on the basis of PCT and national work products«, OY 2017, A77)
  • a demand Brazilian ( ' Patent Prosecution Highway pilot program between the European Patent Office and the National Institute of Industrial Property of Brazil on the basis of products resulting from national works«, OY 2017, A96).

The parts to be produced are indicated in point C (" Patent Prosecution Highway pilot program between IP5 offices on the basis of PCT and national work products », OY 2016, A106).

There is also a program of this type in US, CN, KR, JP, CA, SG, MX, AU and IL.

2.4.2. Waiver of Examination Confirmation

If the applicant submits the request for examination before receiving the search report, he may waive the invitation to R70 (2) EPC requesting him to confirm the examination (ie filing an unconditional request for examination, irrespective of the results of the search) (" Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94).

In this case, a notification under theA94 (3) EPC or R71 (3) EPC (Directives C-VI 3 and R62 (1) EPC) will be issued a few days after the transmission of the TPP (which will have no opinion as to patentability).

2.4.3. Renunciation at the reception R161-R162 CBE

When entering phase, it is possible for the applicant to waive his right to receive the notification R161 EPC allowing him to make changes to his application (" Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94).

In order to do this, it will be necessary for him to have, upon entering phase Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94):

  • filed amendments in response to the written opinion of ISA (or HIFIS or IPEA as appropriate);
  • paid the necessary claims fees.

2.4.4. Give up the full six-month period of R161-162

Where a notification under R161 EPC and R162 EPC has been issued, the applicant is entitled to the full six-month period to file amendments.

If the applicant does not wish to use the entire six-month period, he or she may request the immediate start of the search or examination.

It may, for example, be worded as follows: " The applicant requires the immediate commencement of treatment and waives his right to use the remainder of the six-month period referred to in  R161 EPC and R162 EPC »(« Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94).

Section 2.5. At the stage of deliverance

2.5.1. Principle

If the applicant approves the text without delay, the grant will follow without delay.

Of course, all taxes due will also have to be paid and the translations of claims provided.

2.5.2. Renunciation to a second 71 (3)

If the applicant proposes changes in response to a R71 (3) EPC he can at the same time give up a next R71 (3) EPC ( 'Notice from the European Patent Office dated 8 June 2015 concerning the possibility of waiving the right to receive a new notification under Rule 71 (3) EPC", OJ 2015, A52 and Notice from the European Patent Office dated 30 November 2015 on ways to speed up the European grant procedure », OJ 2015, A94).

Of course, if the applicant waives his right to receive a new R71 (3) EPChe must at the same time as this renunciation carry out all the acts necessary to give his agreement (see above: taxes, translation, etc.).

Section 2.6. At the opposition stage

2.6.1. Counterfeit action

If an action for infringement has been brought before a national court, it is possible for a party to submit an application for accelerated processing (" Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an action for infringement has been initiated », OG 2008, 221point 1).

This request can be filed at any time.

It must be in writing and be reasoned.

The EPO then makes its best efforts to perform the next procedural act (the latest expiry date being retained) (" Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an action for infringement has been initiated », OG 2008, 221, point 1):

  • in a delay of 3 months from the receipt of the request;
  • if the request has been made within the opposition period, within 3 months from receipt of the holder's response to the notice of opposition.

This acceleration will also be carried out if a court or competent administration notifies the EPO that an infringement action is pending (" Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an action for infringement has been initiated », OG 2008, 221point 2).

The cooperation of the parties is essential (" Notice from the European Patent Office dated 17 March 2008 concerning accelerated processing of oppositions where an action for infringement has been initiated », OG 2008, 221point 3).

2.6.2. Case of a straw man

We know that it is possible to file an opposition by a straw man.

In this situation, it is necessary to be careful because the acceleration of the procedure will be quite difficult to motivate because it is not possible to invoke grounds relative to the "true" opponent (T872 / 13).

2.6.3. Other cases

The EPO will also speed up the procedure if (Directives D-VII 1.2):

  • the duration of the examination procedure has clearly exceeded the average duration;
  • the length of the opposition proceedings significantly exceeded the average duration;
  • other cases (eg divisional) depend on the outcome of the opposition;
  • the next phase of the exam requires only a relatively short time.

Section 2.7. At the appeal stage

2.7.1. Principle

This acceleration is provided by the " Communiqué of the Vice-President of Directorate-General 3, dated 17 March 2008, on the acceleration of the proceedings before the Boards of Appeal », OG 2008, 220 (Directives E-VIII 5).

2.7.2. Who can require

Any party which has a legitimate interest has expedited the proceedings may require it, including the courts or competent services of a Contracting State.

2.7.3. Request

The request must be addressed to the competent board of appeal at any time during the proceedings.

It must state the grounds of urgency and cover the supporting documents.

2.7.4. Reasons for emergency

The reasons must be related to the nature of the case. For example :

  • an action for infringement is instituted or contemplated;
  • the decision to subscribe to a license is subject to the outcome of the appeal;
  • the opposition must be dealt with in an accelerated manner;
  • because of the inconvenience of the suspensive effect of the (exceptional) remedy;
  • etc.

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